Friday, 29 August 2014

This
appeal decision relates, among other things, to extension of protection conferred and, in that context, a request to refer the some portions of the case to the Enlarged Board of Appeal. The appeal has been filed by the proprietor against a decision of the Opposition Division. According to the Opposition Division all claims of the requests contravened the requirements of Article 123(3) EPC. The granted claim 1 comprised the feature "a water-soluble polyalkylene glycol in an amount of 5% to 90% by weight", while the claims of the requests in opposition were not limited to this feature. The main request of the appeal was equal to auxiliary request of the opposition proceedings. The Appellant cited some case law decisions which are, according to his opinion, in favor of his request to set the decision of the Opposition Division aside. During oral proceedings before the Board of Appeal the Appelant requested, should the main request be considered not allowable, to refer a question to the Enlarged Board of Appeal to ensure a uniform application of law since such a decision would be in contradiction to the cited case law.Citations from the decision:

Summary of Facts and Submissions
[ ... ]
VI. The Appellant argued [before the Board of Appeal] that the amendments
made to the independent claims of all requests did not lead to an
extension of the protection conferred by the patent as granted. Taking
claim 1 as being exemplary for all the independent claims of each of
these requests, claim 1 always specified inter alia that the composition
comprised from 5% to 90% by weight of a water-soluble polyalkylene
glycol of the same definition as that given in granted claim 1, such
that it did not encompass compositions having a content of more than 90%
by weight of such water-soluble polyalkylene glycols. The Appellant
cited decisions T 999/10 and T 009/10 in support of its arguments for
the main request, and T 172/07 (none of these decisions being published
in OJ EPO) in support of its arguments for auxiliary request 1, in this
respect. During the oral proceedings before the Board, it also requested
that should the main request be considered not allowable, the following
question be referred to the Enlarged Board of Appeal in order to ensure
uniform application of the law, since such a decision would be in
contradiction to those of decisions T 999/10 and T 009/10:"Where a
granted claim relating to a composition comprising certain components
specifies an amount range for a class of specific components and that
claim is later amended in opposition such that the composition is
limited with an additional feature versus granted claim stating that the
composition must comprise specific species from that class, does that
result in a contravention of A.123(3) EPC in view of the amount range
for the component class automatically applying to only those specific
species now listed and not applying to those specific species now listed
AND the component class?"
The Appellant argued that the
subject-matter of the main request and auxiliary request 1 was clear,
the skilled person understanding the definitions of R and A as mixtures
of methyl and hydrogen in the context of polymer chemistry to mean that
these two variables were merely independent of one another. It argued
that document (6) (see point VII below) was late-filed and that in any
case, the wording requiring that the polyalkylene glycol was
water-soluble had been in the claims as granted. As such, any alleged
lack of clarity did not arise out of the amendments made, with the
consequence that the Board had no power to examine lack of clarity at
this stage of the proceedings.[...]Reasons for the Decision[...]Main request
2. Amendments (Article 123(3) EPC)

2.1
Article 123(3) EPC requires that the claims of a patent as granted may
not be amended during opposition/appeal proceedings in such a way as to
extend the protection conferred by the patent as a whole. In order to
decide whether or not an amendment satisfies this requirement, it is
necessary to compare the protection conferred by the claims as granted,
with that of the claims after amendment.

2.2 Thus the question to
be answered is whether the claims of the main request cover any
compositions or methods which were not covered by the claims as granted.
The following analysis is for claim 1 of the main request compared to
claim 1 as granted, similar considerations applying to independent
claims 4 to 6, 15 and 16 of the main request vis-à-vis the respective
claims 4, 6, 7, 16 and 17 as granted.

2.3 Claim 1 of the patent as
granted is directed to an aerosol hair styling composition comprising
inter alia (a) from 5% to 90% by weight of a water-soluble polyalkylene
glycol that is substantially free of polyalkylene glyceryl ethers,
except if the composition comprises a silicone or silicone derivative,
and that has a number average molecular weight of from 190 to 1500 and
from 5 to 35 repeating alkylene oxide radicals wherein each of the
repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or
triglycerin or PPG-4.

2.3.1 The use of the term "comprising" in
connection with a numerical range defining the amount of a component
implicitly means that the protection conferred by the claim does not
extend to compositions containing that component in amounts outside the
defined range (see T 2017/07, Headnote, ibid.).

2.3.2 In the
present case, this means that the protection conferred by claim 1 as
granted, as far as component (a) is concerned, is restricted to aerosol
hair styling compositions containing not less than 5% and not more than
90% by weight of any water-soluble polyalkylene glycol that is
substantially free of polyalkylene glyceryl ethers, except if the
composition comprises a silicone or silicone derivative, and that has a
number average molecular weight of from 190 to 1500 and from 5 to 35
repeating alkylene oxide radicals wherein each of the repeating alkylene
oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4,
which finding has not been contested by the Appellant.

2.4 Claim 1
of the main request differs from claim 1 as granted by virtue of the
insertion after the definition of the component (c) of the feature:
"wherein the water-soluble polyalkylene glycol conforms to the

wherein
A is selected from the group consisting of methyl or hydrogen or
mixture thereof and wherein R is selected from the group consisting of
H, methyl, and mixtures thereof, and wherein n has an average value of
from 5 to 35".

2.4.1 In view of the wording "wherein the
water-soluble polyalkylene glycol conforms to the formula" (emphasis
added), the component (a) is to be regarded as restricted to those
specific water-soluble polyalkylene glycols of the formula recited, such
that the amount of 5% to 90% by weight of water-soluble polyalkylene
glycol applies to this more restricted definition only, and no longer to
the broader definition.2.5 Thus, claim 1 of the main request no
longer requires, as does claim 1 as granted, that the composition
contains at most 90% by weight of polyalkylene glycols of the broader
definition given in granted claim 1, since the definition of the
composition in claim 1 is "open" due to the characterization by the term
"comprising", i.e. the composition can contain in addition to the
compounds specified in the claim any other compounds. Therefore, the
composition of claim 1 of the main request may comprise in addition to
water-soluble polyalkylene glycols of the specific formula now defined,
any other water-soluble polyalkylene glycol as defined in granted claim 1
in an undefined amount, whereas claim 1 as granted restricted the
amount of these compounds to no more than 90% by weight.

2.6 The
protection conferred by claim 1 according to the main request is thus
extended in comparison with the protection conferred by claim 1 as
granted. The Appellant did not argue that the protection conferred by
claim 1 of the main request was covered by any of the other independent
claims as granted, nor does the Board hold that this is the case.
2.7
For similar reasons, independent claims 4 to 6, 15 and 16 of the main
request extend the protection conferred by the respective claims 4, 6,
7, 16 and 17 as granted.
2.8 The Appellant argued on the basis of
the conclusions reached in decision T 999/10 that since claim 1 of the
main request was drafted in "cascade form", i.e. the claim contained
both a broader and a narrower definition of a particular group of
compounds (see T 999/10, points 3.4 and 3.5 of the Reasons), the weight
limitation of 5% to 90% applied to both definitions of the component (a)
given therein, with the consequence that the total amount of
water-soluble polyalkylene glycol could not fall outside the amount of
5% to 90% by weight. The Appellant also submitted that in the case
underlying decision T 009/10 (see point 2.1 of the Reasons), a claim
which had been amended similarly vis-à-vis the granted version was
considered not to contravene Article 123(3) EPC.

2.8.1 However, in
view of the wording "wherein the water-soluble polyalkylene glycol
conforms to the formula", the Board considers that the water-soluble
polyalkylene glycol of component (a) is defined as being of that
specific formula, and not, as suggested by the Appellant as comprising a
water-soluble polyalkylene glycol of this formula. Thus, the Board
holds that the first, broader definition of component (a) in claim 1 is
restricted by the second narrower definition of the specific formula,
such that the amount of 5% to 90% weight applies to the narrower
definition only. In view of this interpretation of the claim, the Board
sees no need to turn to the description in order to interpret the claim,
as was the case in decision T 009/10.

2.8.2 Concerning decision T
999/10 cited by the Appellant, claim 1 of the main request thereof
relates to an adhesive comprising inter alia 45 to 85% by weight of one
or more styrene block copolymers, wherein the styrene block copolymer is
a copolymer of the type styrene/isoprene/styrene (SIS), claim 1 as
granted relating to an adhesive comprising inter alia 45 to 85% by
weight of one or more styrene block copolymers, said copolymer not being
further defined (see T 999/10, points I and IX of the Facts and
Submissions). Said decision states (see point 3.4 of the Reasons) that
in view of the sequential ("cascade") formulation of the claim, there
was no doubt as to the "intention" of the patent proprietor that no
other block copolymers other than the specific SIS-type may be present
in the adhesive. The decision goes on to state (see point 3.5 of the
Reasons) that even if the claim were to be interpreted as not excluding
the presence of other block copolymers, the sequential formulation
chosen by the patent proprietor meant that the condition limiting the
amount of block copolymer defined in the broader manner as in granted
claim 1, should also be fulfilled in the amended claim.
However,
the scope of protection should not be interpreted in the light of the
intention of the drafter of a claim, since this is a subjective
criterion, but rather on the basis of the meaning generally accepted by
the person skilled in the art to the technical features defined in said
claim, such that this Board is not convinced by argumentation based on
any alleged intention of a drafter of a claim.

2.9 Thus, the Board
concludes that the scope of protection conferred by claim 1, and by the
same token that of independent claims 4 to 6, 15 and 16, has been
broadened vis-à-vis that of the claims as granted, such that the main
request does not satisfy the requirements of Article 123(3) EPC.

3. Request for referral of a question to the Enlarged Board of Appeal

3.1
Under Article 112(1)(a) EPC, a board of appeal may, during proceedings
on a case and either of its own motion or following a request from a
party to the appeal, refer a question to the Enlarged Board of Appeal if
it considers that a decision is required in order to ensure uniform
application of the law, or if an important point of law arises.

3.2
In the present case, the Appellant requested that if the Board did not
allow its main request for reasons of contravening Article 123(3) EPC,
such a decision would be contradictory to decisions T 999/10 and T
009/10, such that a question (see point VI above for exact formulation)
regarding whether particular amendments to granted claims relating to
compositions comprising a class of components and specifying an amount
range thereof contravened Article 123(3) EPC should be referred to the
Enlarged Board of Appeal in order to ensure uniform application of the
law.

3.3 The Board holds, however, that the question formulated by
the Appellant concerns the interpretation of technical features of a
claim of the specific patent in suit, this not being a question of law
but primarily a technical issue (cf. T 181/82, point 14 of the Reasons,
OJ EPO 1984, 401), because it requires the skilled person to interpret
technical information, namely whether amendments to a chemical
definition have an impact on the broadness of the claim.

3.4 Hence, the Appellant's request to refer a question to the Enlarged Board of Appeal is rejected.

Auxiliary request 1

[...]

5. Amendments (Article 123(3) EPC)

5.1
Compared with claim 1 as granted, the definition of component (a) in
claim 1 according to auxiliary request 1 is supplemented by the
following feature:"wherein the water-soluble polyalkylene glycol conforms to the formula

wherein
A is selected from the group consisting of methyl or hydrogen or
mixture thereof and wherein R is selected from the group consisting of
H, methyl, and mixtures thereof, and wherein n has an average value of
from 5 to 35",and after the definition of component (c), the following feature has been added:"wherein
the total amount of water-soluble polyalkylene glycol that is
substantially free of polyalkylene glyceryl ethers and that has a number
average molecular weight of from 190 to 1500 and from 5 to 35 repeating
alkylene oxide radicals wherein each of the repeating alkylene oxide
radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4 is in the
range of 5% to 90% by weight".

5.2 The amended claim thus
requires that a water-soluble polyalkylene glycol of the specific
formula is present within the amounts given, but also that the total
amount of water-soluble polyalkylene glycols of the broader definition
indicated in the claim is in the range of 5% to 90% by weight. Said
wording renders it unambiguous that no more and no less than the amount
of a water-soluble polyalkylene glycol as defined in granted claim 1 may
be present in the aerosol hair styling composition, and thus overcomes
the problem of extension of protection inherent in the main request.

5.3
Thus, the Board concludes that the scope of protection conferred by
claim 1, and by the same token that of independent claims 4 to 6, 15 and
16, has not been broadened vis-à-vis that of the claims as granted.

5.4
Thus, the requirement of Article 123(3) EPC is satisfied, the
Respondent also having no objections under Article 123(3) EPC to the
claims of this request

[...]This decision has European Case Law Identifier: ECLI:EP:BA:2014:T028711.20140401. The whole decision can be found here. The file wrapper can be found here. Photo obtained from FreeDigitalPhotos.net.

Tuesday, 26 August 2014

This is an appeal against a decision of the Opposition Division to revoke European patent No. EP 1 777 048 as lacking inventive step. Because the proprietor failed to participate in any way in the opposition proceedings in first instance, none of the proprietor's requests filed with the statement setting out the grounds of
appeal, were held admissible. The appeal was dismissed. The case shows again that the Boards of Appeal are strict in applying their Rules of Procedure, in particular Article 12(4) RPBA, according to which the Board has the discretionary power to hold inadmissible
facts, evidence or requests which could have been presented or were not admitted
in the first-instance proceedings.

Reasons for the Decision
1. The present case is marked by special circumstances that affect the legal
nature of the appeal proceedings and raise the issue of whether the appellant,
in submitting its case for the first time in its appeal, is complying with the
purpose of the appeal according to Article 106 EPC.

2. Appeal proceedings are wholly separate and independent from proceedings
before the administrative departments of the EPO, here the opposition division
(see G 8/93, OJ EPO 1994, 887, point 1 of the Reasons). Their function is to
give a judicial decision upon the correctness of a separate earlier decision
taken by a department in order to relieve the appellant from the adverse effect
of the decision under appeal (see G 9/92 and G 4/93, OJ EPO 1994, 875, points 5
and 9 of the Reasons; G 1/99, OJ EPO 2001, 381, point 6.1 of the Reasons). In
decisions G 7/91 and G 8/91 (OJ EPO 1993, 356, 346, point 7 of the Reasons), G
9/91 and G 10/91 (OJ EPO 1993, 408, 420, point 18 of the Reasons) and G 1/99
(supra, point 6.6 of the Reasons), the Enlarged Board held that the appeal
procedure is to be considered as a judicial procedure proper to an
administrative court.
It follows from the characteristics set out by the Enlarged Board that the
general principles of court procedure, such as the entitlement of parties to
direct the course of the proceedings themselves ("principle of party
disposition"), also apply to appeals, that a review of the decision taken by the
administrative department can, in principle, only be based on the reasons
already submitted before that department, and that the proceedings are
determined by the petition initiating them (ne ultra petita) (see Case Law of
the Boards of Appeal, 7th edition 2013, Chapter IV.E.1).To guarantee their judicial function, proceedings before the boards of appeal
are governed by rules of procedure (RPBA).

2.1 Article 12(4) RPBA requires the Board to take into account everything
presented by the parties under Article 12(1) RPBA if and to the extent that it
relates to the case under appeal and meets the requirements in Article 12(2)
RPBA. However, according to Article 12(4) RPBA, the Board has the discretionary
power to hold inadmissible facts, evidence or requests which could have been
presented or were not admitted in the first-instance proceedings. This
discretionary power serves the purpose of ensuring fair and reliable conduct of
judicial proceedings (see T 23/10, not published, point 2.4 of the Reasons).

2.2 It follows from the above that a party to appeal proceedings has no
absolute right to have a request which could have been filed in the proceedings
before the administrative department but was only filed with the statement
setting out the grounds of appeal, considered in the appeal proceedings (see
e.g. R 10/09, point 3.2 of the Reasons; R 11/11, point 9 of the Reasons; T
144/09, point 1.14 of the Reasons; T 936/09, point 2 of the Reasons, all
decisions not published).
Consequently, a patent proprietor who files such a request cannot defend its
patent on the basis of that request in appeal proceedings if the Board,
exercising its discretion under Article 12(4) RPBA, holds it inadmissible.
According to established jurisprudence, discretion has to be exercised
equitably, i.e. all relevant factors which arise in the particular circumstances
of the case have to be considered (see G 7/93, OJ EPO 1994, 775, point 2.5 of
the Reasons; R 11/11, point 9 of the Reasons; T 931/06, not published, point 3.5
of the Reasons; T 23/10, point 2.3 of the Reasons).

3. In the opposition proceedings, the appellant, although having received
several EPO communications, see points IV to VI above, did not react at all to
the opposition filed against its patent. The appellant did not file any
submissions, such as requests, arguments or amended claims, in the course of the
opposition proceedings, despite being given several opportunities to do so, see
points IV to VI above. Undeniably, throughout the opposition proceedings, the
appellant declined to take the opportunity to defend in writing its patent as
granted or in amended form. Nor did the appellant file a request for oral
proceedings, with the result that the opposition division was not obliged to
hold oral proceedings in case of a revocation of the patent.

3.1 In the Board's view, by its conduct the appellant thus made a "considered
and deliberate choice" to remain completely passive and not to play any active
role by reacting to the opposition in writing or orally, despite being given the
opportunity to do so by the opposition division.The Board considers the appellant's conduct in the opposition proceedings
particularly significant since a patent proprietor usually files at least a
request for maintenance of its patent in unamended or amended form, together
with arguments as to why the grounds for opposition raised do not prejudice the
maintenance of the patent as granted if it wants to maintain its patent in that
form, or why its patent in a limited form meets the requirements of the EPC.

3.2 The Board fully concurs with the principle established in T 936/09 (see
also Case Law of the Boards of Appeal, Chapter IV.E.4.3.2 b)) that a patent
proprietor is not free to present or complete its case at any time it so wishes
during the opposition or opposition appeal proceedings, depending, for example,
on its procedural strategy or its financial situation:
"It is not the purpose of the appeal to conduct the case anew and, therefore,
the issues to be dealt with in appeal proceedings are determined by the dispute
underlying the opposition proceedings (see e.g. T 356/08, point 2.1.1 of the
Reasons). Thus the appeal proceedings are not just an alternative way of dealing
with and deciding upon an opposition. Parties to first-instance proceedings are
therefore not at liberty to shift their case to the second instance as they
please, thereby compelling the board of appeal either to give a first ruling on
the critical issues or to remit the case to the department of first instance
(see also T 1067/08, point 7.2 of the Reasons). The filing of new submissions
(requests, facts or evidence) by a party are not precluded in appeal
proceedings, but their admission is restricted, depending inter alia on the
procedural stage at which the submissions are made (see e.g. T 356/08, point
2.1.1 of the Reasons, T 1685/07, point 6.4 of the Reasons; Brigitte Günzel, "The
treatment of late submissions in proceedings before the boards of appeal of the
European Patent Office", Special edition OJ EPO 2/2007, 30)."

3.3 There is no legal obligation under the EPC for a patent proprietor to
take an active part in opposition proceedings, for example by filing at least a
request, arguments or amended claims. However, if it chooses not to complete its
submissions at the stage of the opposition proceedings, but rather to present or
complete its case only in the appeal proceedings, then it will need to face the
prospect of being held to account for such conduct by the Board when, for
example, exercising its discretion under Article 12(4) RPBA.

3.4 This applies in particular if all the reasons for revocation of the
opposed patent were known to the patent proprietor before it received the
impugned decision.
In the present case the notice of opposition clearly indicated the grounds
for opposition, together with the supporting evidence and submissions, and the
appellant could and should have expected that the ground for opposition raised
in the notice of opposition would most probably be dealt with in the decision of
the opposition division. Due to the appellant's complete failure to participate
in the opposition proceedings these facts had never been contested by the
appellant and, therefore, could be regarded as uncontested.There is nothing in the decision under appeal which goes beyond the content
of the notice of opposition.

3.5 Thus, all the reasons for revocation of the opposed patent were known to
the appellant before it received the impugned decision, and it could have
reacted to them by at least requesting during the opposition proceedings the
rejection of the opposition, i.e. maintenance of the patent as granted.
Moreover, the appellant was given several opportunities to argue against the
grounds for opposition or to react to them, see points IV and VI above.
Consequently, at that stage the appellant could well have filed a request and/or
arguments as it did with its statement setting out the grounds of appeal.

3.6 The reason given by the appellant for not reacting to the opposition was
that it was persuaded that the grounds for opposition were unfounded and that
the opposition division would reject the opposition without it needing to file
any requests or arguments.
The Board notes that such motives cannot justify the appellant's complete
failure to defend its patent that had been substantively opposed by the
respondent. Even if the appellant thought that the objections submitted with the
respondent's opposition would not compromise maintenance of the patent as
granted and that it could refrain from submitting any arguments and evidence and
from filing any request to counterbalance the opposition, this does not mean
that it could not have done so or that it could await passively the final
decision of the opposition division.In view of the foregoing, the Board concludes that the appellant could well
have defended the patent in suit in the opposition proceedings in response to
the objections raised in the notice of opposition. Hence the Board considers
that the provisions of Article 12(4) RPBA are pertinent for the present case.Allowing the appellant to shift the defence of its patent entirely from the
opposition proceedings to the appeal proceedings would be at odds with the
judicial nature of appeal proceedings.

3.7 The Board is well aware that the appellant's main request is directed to
setting aside the decision under appeal and to maintaining the patent as
granted, and that not admitting its request and supporting submissions would
create a situation where the appellant effectively cannot argue with the grounds
for opposition on which the decision under appeal is based.
The appellant is right that in this respect the present case differs from the
factual situation in case T 936/09.

3.8 However, the aforementioned consequence is direct result of the
appellant's considered and deliberate choice not to respond at all to the
objections submitted with the opposition during the opposition proceedings, and
to defend its patent for the first time in appeal proceedings.
As argued by the respondent, the appellant effectively circumvented the
opposition proceedings by defending its patent exclusively in the appeal
proceedings. In this way, the appellant has tried to shift its case entirely to
the second instance, thereby compelling the Board either to give a first ruling
on the appellant's case or to remit the matter to the opposition division. Such
a shifting of the appellant's case would also put the respondent at an
unjustified disadvantage because if the appellant's main request were admitted
and decided upon by the Board, at least the part of the appellant's case
relating to the admissibility of documents E1, E3, E5 and E6 would have been
dealt with only by the Board and the respondent would be factually deprived of
an examination of that issue before two instances.

3.9 Furthermore, the Board cannot follow the appellant's argument that since
the impugned decision examined the issue of inventive step in respect of the
subject-matter of claim 1 of the patent as granted, and the appellant's main
request is directed to maintenance of the patent as granted, the Board examining
that request would not be dealing with a fresh case but would be acting as
second instance for the same issue, namely whether the subject-matter of claim 1
of the patent as granted involves an inventive step, for the following
reasons.

3.10 The respondent submitted with its opposition inter alia documents E1,
E3, E5 and E6 supporting its prior-use based attack asserting that the
subject-matter of claim 1 of the patent as granted lacked inventive step.
This evidence and the corresponding arguments were not contested by the
appellant during the opposition proceedings. The opposition division, on the
basis of said uncontested evidence, saw no reason not to follow the respondent's
equally uncontested arguments and found that the subject-matter of claim 1 of
the patent as granted did not involve an inventive step.
The appellant's action in contesting the admissibility of said evidence for
the first time in its statement setting out the grounds of appeal means that the
Board would have to start the examination of the present case anew, i.e. from a
situation where the admissibility of the evidence leading to the impugned
decision has been contested for the first time by the appellant.
Since the opposition division was prevented by the appellant's behaviour
during the opposition proceedings from evaluating the admissibility of prior use
evidence E1, E3, E5 and E6 in the light of the appellant's arguments, which were
presented for the first time in its statement setting out the grounds of appeal,
if the Board were now to evaluate the admissibility of that uncontested prior
use evidence it would be examining the appellant's admissibility objections for
the first time, rather than evaluating the decision under appeal about them, as
the opposition division was not confronted with any such objections at any
time.

3.11 For the above reasons, the Board, exercising its power under Article
12(4) RPBA, decided to hold inadmissible the appellant's main request and its
supporting submissions.

4. The issue of whether the appellant's three auxiliary requests could be
held admissible in the appeal proceedings is to be examined against the
background of the conclusions set out above.

4.1 As stated by the appellant, claims 1 of its first to third auxiliary
requests filed for the first time with its statement setting out the grounds of
appeal are mainly based on combinations of the independent claim 1 with
different dependent claims of the patent as granted.

4.2 Accordingly, claims 1 of said auxiliary requests are directed to
subject-matter which has not been taken into consideration in the opposition
division's decision, which was based only on claim 1 of the patent as
granted.

4.3 This indisputably generates a fresh case for the Board to deal with.

4.4 The Board's reasoning above leading to excluding the appellant's main
request from the appeal proceedings applies mutatis mutandis also to the
auxiliary requests.
Hence, the Board, exercising its power under Article 12(4) RPBA, decided to
hold inadmissible the appellant's three auxiliary requests.

5. Since there is no admissible request of the appellant on which the appeal
proceedings could be based, the appeal must be dismissed.Order
For these reasons it is decided that:
The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T140011.20140703. The whole decision can be found here. The file wrapper can be found here. Photo titled "fighting~Round one Rloha V.S Rmani - the winner is......" by Chung Shao Tung, unchanged, obtained via Flickr under CC BY-SA 2.0 license.

Friday, 22 August 2014

The following concerns an appeal against a decision of the Examination Board which, in view of the appellant, was based on the Examination Board holding a factually erroneous view of the answer to statement 10.4 of the pre-examination of 2014 which resulted in the appellant obtaining an overall score of 68 and thereby being awarded a 'fail'.Statement 10.4 read "Before the publication of EP-T, it is not possible to amend the description of EP-Tin order to delete embodiment X1."The Examiners Report indicates that the statement should be considered "True", because: "Even if the applicant filed amended application documents with the EPO before the termination of the technical preparations for publication, only amended claims would be included in the publication but not an amended description, Rule 68(4) EPC."

The appellant argues in his appeal that the answer provided in the Examiners Report did not match the statement 10.4, and that the statement should rather be considered "False". (for further substantive discussion on statement 10.4, see, e.g., here).According to Art. 24(3) of the Regulation on the European qualifying examination for professional representatives (REE), if the Examination Board or the Secretariat considers the appeal to be admissible and well-founded, it shall rectify its decision and order reimbursement of the fee for appeal. However, if the appeal is not allowed within two months from notification of the decision, it shall be remitted to the Disciplinary Board of Appeal of the EPO.In the present decision, the appeal was not allowed and thus remitted to the Disciplinary Board.Short English summary of the 'Entscheidungsgründe'The Disciplinary Board agrees with the appellant in considering the answer to statement 10.4 provided in the Examiners Report to mismatch the statement, with this mismatch unduly working in the disadvantage of the appellant. The Disciplinary Board thus considers the appeal to be allowable. However, the Disciplinary Board considers that Art. 24(4) REE second sentence does not give the Board the power to, beyond setting aside a decision, also change a candidate´s marking.It is then considered by the Disciplinary Board whether there are are 'special reasons' in accordance with Art. 12 of Additional Rules of Procedure of the Disciplinary Board of Appeal which would allow the Disciplinary Board to change the candidate's markings, rather than remitting the case to the Examination Board.Art. 12 of said Additional Rules of Procedure reads as follows:"If fundamental deficiencies are apparent in proceedings before the Disciplinary Body whose decision is under appeal or before the Examination Board, the Disciplinary Board of Appealshall remit a case to that Body or Board, unless special reasons present themselves for doing otherwise."The Disciplinary Board indeed considers such special reasons to be present (see points 10-12), thereby, instead of remitting the case to the Examination Board, ordering a setting aside of the decision, the awarding 71 points to the appellant and the awarding a 'pass', and the reimbursement of the appeal fee.See also similar decisions D 4/14, D 5/14 and D 6/14.Entscheidungsgründe

Tuesday, 19 August 2014

This opposition appeal concerns a labeling device. Two Japanese
language documentsD13(O) and D14 were
filed during the opposition proceedings.
Translations
were filed during the appeal period, first a machine translation later followed by a certified translation. For
document D13(O), machine translation D13(O)' was filed about a month
before oral proceedings;a certified
translation D13(O) " was filed three working days before the oral
proceedings.

The machine translation is quite reasonable, but nevertheless provide some puzzling sections. For example, Claim 1 according to the main requests comprises 'a continuous paper tensioning device'. This feature is found in the guide rollers 7 of D13(O). The machine translation of the section of D13(O) that relates to guide rollers 7 reads as follows:

Fig. 6
shows the outline composition of this conventional kind of Label Printer, and 1

A printer
body, The continuous paper for label printing in 2, the paper feed motor

with which
3 consists of stepping motors, The platen to which the step drives of 4 are

carried out
by the paper feed motor 3, and the printing beef fat 5 and 6 which 5 is

provided in
the opposed position of a platan and prints label data to the continuous

paper 1 are
formed in the latter part of the printhead 5, and the cutter mechanism

which cuts
the printed paper 2, and 7 The guide idler of the paper 2, It is a keyboard

with which
the sensor for positioning of a label is allocated 8 and a numeric key, an

issue key,
a feed key, etc. are allocated 2 .

If the
issue key of the keyboard 9 is operated where issue number of sheets is set up

while
carrying out a deer and inputting label data, the paper feed motor 3 operates
and

the platen
4 rotates counterclockwise, and it will be conveyed while the continuous

paper 2 is
guided to the guide idler 7 by this.

This is the corresponding part in the certified translation

In FIG. 6, which shows schematically the
configuration of a conventional label printer of this type, the reference
numbers denote the following:

1... printer body

2... continuous form for label printing

3... paper feed motor consisting of a stepping
motor

4... platen driven stepwise by the paper feed
motor 3

5... print head provided opposite the platen
and serving to print label data on the continuous form 1

6... cutter mechanism provided subsequent to
the print head 5 and serving to cut the form 2 on which printing has been
completed

7 . . . guide rollers for the form 2

8... sensor for positioning of labels

9... keyboard on which are arranged numeric
keys, an “issue” key, a “feed” key, etc.

Once label data has been input and the number
of labels to issue has been set, then, if the “issue” key on the keyboard 9 is
operated, the paper feed motor 3 operates and the platen 4 is rotated
anticlockwise, with the result that the continuous form 2 is transported while
being guided by the guide rollers 7.

Even though the machine and certified translations were provided relatively shortly before Oral proceedings, the Board admits the translations into the proceedings. It does not allow the first auxiliary requests filed at the oral proceedings, as it does not prima facie overcome D13(O).

Sections relating to document D14 have been omitted.

Reasons for the Decision

(...)
2. Late filed documents

Documents
D13(O) and D14 were filed during the opposition proceedings after the
nine months opposition period. They were therefore regarded as late
filed so that the Opposition Division applied the criteria of prima
facie relevance for deciding on their admission in the proceedings,
which was contested by the respondent.

The translations D13(O)',
D13(O)" and D14" were filed by the appellant during the appeal
proceedings so that they were subject to the discretionary power of the
Board for their admission in the proceedings. D14' was introduced by the
Board with the annex. The respondent contested their admission.

D7A
was introduced by the Board to be used instead of D7. As a matter of
fact, D7A is a prior art document according to Article 54(2) EPC and,
hence, can be used for assessing inventive step of the claimed
subject-matter, contrary to D7. The admission of D7A in the proceedings
was not contested by the parties.

2.1 Admission of document D13(O)

The
appellant contested the Opposition Division's decision to not admit
D13(O) in the proceedings. The Opposition Division held that prima facie
some of the features of claim 1 were not present or suggested in the
document (impugned decision, points 11 and 11.1).

As put forward
by the Board in the annex, point 6.1.1, it appears that the Opposition
Division considered only novelty for assessing the prima facie relevance
(see also point 5 of the minutes of the oral proceedings before the
Opposition Division). However, inventive step is also one of the
conditions in order to assess the prima facie relevance of a document.
Since this had not been done, the Board informed the parties in the
annex that the prima facie relevance of document D13(O) would have to be
re-considered for the Board to decide when exercising its discretionary
power to admit it or not in the proceedings. The Board also further
emphasized that, contrary to the written respondent's allegation, it
could not find any hint in the impugned decision that the Opposition
Division considered the disclosure of D13(O) as not going beyond that of
D1-D12.

During the oral proceedings before the Board, the
respondent, referring to Rule 3(3) EPC, put forward that a document
filed in a language other than an official language of the EPO should be
disregarded if a translation was not filed in due time. Since a
translation of D13(O), especially the certified translation, was filed
very late, i.e. only three working days before the oral proceedings,
D13(O) should be disregarded and, hence, not admitted in the
proceedings.

The Board could not share the respondent's view for
the reason put forward by the appellant that a translation was not
required for assessing that D13(O), in view of the English abstract and
the figures, discloses the same solution as in the contested patent of
reversing the feeding of the paper to be printed for exactly the same
purpose of avoiding processing waste (D13(O), "Purpose" and last three
lines of the abstract, figures 5 and 6; contested patent, [0034]). This
disclosure of D13(O) was indeed relevant when assessing inventive step
of the claimed subject-matter as can be derived from the following.
Furthermore, regarding the filing of a translation, the Board merely
invited the appellant to do so if in its possession without setting a
time limit so that the conditions given in the last two sentences of
Rule 3(3) EPC did not apply.

Therefore, the Board, applying its
discretionary power, decided to admit D13(O) in the proceedings due to
its prima facie relevance.

2.2 Translation documents D13(O)' and D13(O)"

In
the annex to the summons to oral proceedings, the Board invited the
appellant to provide, if in its possession, a proper translation of
D13(O) in one of the official languages of the EPO.
In reaction,
the appellant filed a machine translation in English (=D13(O)') with its
letter dated 17 April 2014, i.e. around one month before the oral
proceedings, and a certified translation in English (=D13(O)") with its
letter dated 16 May 2014, i.e. three working days before the oral
proceedings.
During the oral proceedings, the respondent contested
their admission in the proceedings. It argued that a machine
translation D13(O)' was not enough to properly and fully understand an
original document and that the certified translation D13(O)" should have
been filed earlier than three working days, i.e. de facto only two
working days, before the oral proceedings. Because of this extremely
short time available, it was not in a situation to consider and discuss
the new document D13(O)" with its client and to react appropriately.
Furthermore, no passage of the translations had been cited by the
appellant so that it was left with studying the complete new documents
D13(O)' and D13(O)" at a very late stage in the proceedings. The
respondent further added that the certified translation D13(O)" should
have been filed in due time, in particular in view of the fact that six
years elapsed from the beginning of the opposition proceedings (Rule
3(3) EPC).

The Board could not share the respondent's view for the
reasons put forward by the appellant during the oral proceedings. A
translation of a prior art document in an official language of the EPO
can be submitted at a stage later than the filing of the original
document, as foreseen by Rule 3(3) EPC. Furthermore, the machine
translation D13(O)' was already available to the respondent more than
one month before the oral proceedings so that it had sufficient time to
discuss its complete content with its client and to react accordingly.
The quality of the machine translated document was at such a high level
that a skilled reader could readily understand its technical content
without difficulty. This holds all the more true when considering also
the figures, in particular figure 5, of D13. The possible linguistic
errors in D13(O)' were no obstacle to the understanding of its
disclosure. Finally, in view of the discussions during the oral
proceedings, the later filed certified translation D13(O)" did not add
any technical information with respect to D13(O)'.

Further, the
Board could not accept the respondent's approach to simply ignore
D13(O)' filed one month before the oral proceedings, since, as derivable
from the invitation to file a translation in the annex, it was aware
that it could not be excluded that the Board would admit a translation
of D13(O) in the proceedings.

For the above reasons, the Board decided to admit the translation documents D13(O)' and D13(O)" in the proceedings.

(...)

3.4 During the
oral proceedings, the respondent further argued that the case should be
remitted in view of the admission of the certified translation D13(O)",
which was filed only two working days before the oral proceedings.

The
Board did not share the respondent's view for the reasons given by the
appellant. As already pointed out under point 2.2 above when discussing
the admission of D13(O)' and D13(O)" in the proceedings, a machine
translation of D13(O) was already available to the respondent more than
one month before the proceedings in which all the necessary technical
information was clearly and readily available to a skilled reader.
D13(O)" did not include any additional technical information. The
argument of only two working days leading to a lack of time for the
respondent to revert and discuss the matter with the client could
therefore not be followed. The appellant further cited T 557/94 (not
published in OJ EPO, point 1.3 of the reasons) to support the fact that,
even in case where documents are filed late in appeal, the Board can
still decide to not remit the case to the department of the first
instance.

In view of the above, the Board decided that the invoked
reasons could not justify to remit the case to the department of first
instance.

In the following, it is
essentially referred to D13(O) (abstract and figures) and D13(O)' since,
as already indicated above when discussing admissibility of the
documents, D13(O)" does not add any technical information to what could
be derived from D13(O)'.

(a) Closest prior art D13(O)
D13(O)
relates to labelling and printing machines on continuous paper, i.e. a
neighbouring technical field to that of claim 1 of printing machines on
adhesive tape, and intends as indicated in the following to solve the
same problem of the contested patent (cf. paragraphs [0005] and [0034]),
of avoiding processing waste. Therefore, the Board considers that
D13(O) is, like D14, an appropriate starting point for assessing
inventive step, contrary to the respondent's view.

As recalled by
the Board in the annex, point 9.1, inventive step must be given
irrespective of which of the available documents is selected as closest
prior art, as long as it belongs to the relevant technical field. The
respondent had therefore to expect that inventive step would be
discussed at the oral proceedings in view of other documents than D14,
at that time considered as being the best starting point, should it be
concluded that the objection based on D14, preliminarily held valid by
the Board, would not hold. This is all the more true since many other
objections of lack of inventive step had been raised by the appellant.
In particular, D13(O) had also been regarded as a possible starting
point for inventive step in the statement of grounds of appeal, point
5.3.8, and the Board further explicitly informed the parties that the
non-admission of D13(O) in the proceedings by the Opposition Division
would have to be re-considered in view of its possible relevance for
inventive step (annex, point, 6.1.1). Consequently, the respondent could
not be surprised that inventive step was also discussed at the oral
proceedings on the basis of D13(O).

(b) Disclosure of D13(O)
D13(O) discloses in the wording of claim 1 a labelling machine for printing labels, comprising:

- a tape reel of continuous paper (2) from which the labels are formed;
- a reel unwinding system comprising at least an unwinding roll (see figure 6) and a continuous paper tensioning device (7);
-
a printing group (4, 5), comprising a printing system wherein the
contact between the print head (5) and the continuous paper to be
printed (2) is carried out by a driving roll (4), which cyclically
inverts the rotation direction by the action of a paper feed motor (3);
- a cutting system (6) comprising:
-
a cutting blade (6) which moves perpendicularly to the direction of the
continuous paper to be cut, from which the labels are obtained;
- a counter-blade (see figure 5);
the cutting system (6) being adjacent to the printing group (4, 5) (D13(O), abstract and figures 5-6).

The
translations D13(O)' and D13(O)" merely confirm the above recited
disclosure of D13(O), i.e. the technical information available from the
English abstract and figures 5-6. During the oral proceedings, at the
very start of the discussion on inventive step in view of D13(O), the
respondent, asked by the Board, stated that it understood the technical
content provided in the late filed translation D13(O)" so that it did
not need time to study the document. It also added that it would request
an interruption of the oral proceedings, in case it would consider
necessary to be allocated more time to further study D13(O)", which it
did not do.

(c) Distinguishing features

D13(O) does not disclose the following non-optional features of claim 1:

(i)
- the cutting blade has the cutting edge inclined of an angle comprised
between 2° and 45°, preferably between 2° and 30° with respect to the
tape to be cut;
(ii) - the blade and counter-blade cutting surfaces are covered with solid anti-adhesives;
(iii) - the machine comprises an applying pad;
and
(iv) the machine is for printing and applying labels on containers;
(v) an adhesive tape reel with a tape adhesivized on the internal side of the reel; and
(vi) the driving roll is of anti-adherent material.

As
argued during the oral proceedings, the respondent considers that
D13(O) concerns the printing of forms having always the same format on
continuous paper, while claim 1 on the contrary relates to printing
"labels" of different formats and texts on adhesive tape to be applied
on containers.
The Board, however, following the appellant's view,
considers that these arguments do not disqualify D13(O) as an
appropriate starting point for inventive step for the reasons given
under point (a) above and, further, that the term "label" as such cannot
be seen as leading to a distinguishing feature over D13(O) since it has
a broad meaning and, hence, also encompasses the type of "label"
disclosed by D13(O) (cf. abstract). The respondent's argument that the
claimed machine aims at printing different label formats and/or texts
cannot be regarded as concerning a distinguishing feature over D13(O),
since, as referred to by the Board during the oral proceedings, a
corresponding feature is not included in claim 1 of the main request.

The
respondent is further of the opinion that, in addition to the above
features, D13(O) does not disclose that the cutting system is adjacent
to the printing group.

The Board cannot share the respondent's
view for the reasons put forward by the appellant during the oral
proceedings that "adjacent" does not mean "directly adjacent" in the
sense that the cutting system and the printing group would be in contact
or located within a specific distance from each other. The term
"adjacent" has indeed a broad meaning and, hence, also encompasses the
constructional design shown in figure 5 of D13(O), in which the cutting
mechanism (6) is "adjacent" to the printing group (4, 5). This feature
could therefore not be regarded as a distinguishing feature of the
subject-matter of claim 1 over the machine known from D13(O).

(d) Technical effects of the distinguishing features

The
technical effects of features (i), (ii) and (iii) are already discussed
under point 4.2.1.(d) above. The technical effect of features (i) and
(ii) is to avoid any build-up of adhesive residues both on the blade and
on the counter-blade. The technical effect of feature (iii) is to apply
the label onto the product.

As discussed during the oral
proceedings the technical effect of features (iv), (v) and (vi) is
regarded as to render the machine suitable for printing and applying
labels of adhesive tape on containers.

(e) Problems to be solved

The
first partial problem derived from the effect of features (i) and (ii)
on one side and the second partial problem derived from the effect of
feature (iii) on the other side are already given under point 4.2.1.(e)
above.

With respect to features (iv), (v) and (iv), as put forward
by the appellant during oral proceedings, the third partial problem to
be solved is regarded as to render the machine of D14(O) suitable for
using adhesive tape to be applied on containers.

(f) Obviousness

With
respect to features (i) and (ii), the skilled person, when combining
D7A with D13(O) will, contrary to the discussion under point 4.2.1.(f)
above, keep this time the inverting mechanism of D13(O) since the latter
is not linked to the cutting mechanism but rather intends to reversely
feed the paper in order to bring the leading edge of the paper (2) back
to the printing position for avoiding waste (D13(O), abstract, "without
cutting in the halfway"; confirmed by D13(O)', page 1, line 28 to page
2, line 15 and D13(O)", page 2, line 24 to page 3, line 25). The skilled
person will find no technical difficulty to apply the solution known
from D7A to the cutting mechanism of D13(O) so that features (i) and
(ii) do not support an inventive step.

The respondent's argument
that the skilled person would rather look in D5 for a solution to the
problem derived from the cutting mechanism since, inter alia, D5 relates
to a linerless label like D14, cannot be followed since this does not
prevent the skilled person from contemplating the combination of D7A
with D13(O).

For the same reasons as given under point 4.2.1.(f) above, feature (iii) cannot support an inventive step.

If,
as discussed during the oral proceedings, the skilled person is,
depending on circumstances, faced with the problem of adapting the
machine of D13(O) for the use of adhesive tape corresponding to feature
(v), he will use and apply his common general knowledge to prevent the
tape from sticking to the contacting parts of the machine. By doing so
he will implement the necessary constructional measures and come up with
solutions according to features (iv) and (vi) in an obvious manner. As
put forward by the appellant, when adapting the machine of D13(O), the
skilled person will also immediately consider of inverting the reel
shown in figure 6 of D13(O) in order to obtain the printing face of the
tape in front of the printing head (5) within the framework of his
common general knowledge. Therefore, features (iv), (v) and (vi) cannot
support an inventive step.

In addition, as discussed during the
oral proceedings, the machine of D13(O) is suitable for printing a
single page/label. It is indeed computer-controlled and the number "N"
of pages/labels to be printed can be set to "1", which is in fact the
value by default. Printed single pages/labels are unambiguously
applicable to containers (see D13(O)', page 2, line 46 to page 3, line
10 or D13(O)", page 4, last paragraph).

As a result of the above,
the skilled person starting from D13(O) and using the teaching of D7A
together with his common general knowledge will arrive at the claimed
subject-matter in an obvious manner (Article 56 EPC).

5. First auxiliary request - Admissibility in the proceedings

5.1 The respondent filed the first auxiliary request at the very beginning of the oral proceedings.As
a result of the late filing, the admission of the first auxiliary
request in the proceedings is subject to the discretionary power of the
Board as set out in Article 13(1) RPBA.

5.2 Amendments (Articles 123(2) and (3) EPC)
Claim
1 of the first auxiliary request corresponds to independent process
claim 16 of the patent as granted; dependent claims 2-9 of the first
auxiliary request are based on dependent claims 17-24 of the patent as
granted.

The requirements of Articles 123(2) and (3) EPC are therefore fulfilled. This was not contested by the appellant.

5.3 General arguments

5.3.1
The respondent argued that, since claim 1 of the first auxiliary
request corresponds to claim 16 of the patent as granted, i.e. has been
in the proceedings from the very beginning, and has never been discussed
exhaustively, neither in opposition nor in appeal proceedings (see
points 8.2 and 9.2 of the annex), the first auxiliary request should be
admitted and the case be remitted to the department of first instance
for further prosecution on the basis of this request in order to
preserve the respondent's right of two instances.

It also added
that first auxiliary request should be admitted in reaction to the
admission of the late filed translations of D13(O) and D14 in the
proceedings.

5.3.2 The Board, however, cannot find in the Rules of
Procedure of the Boards of Appeal or the EPC, as apparently suggested
by the respondent, a mechanism of automatism that would force the Board
at the oral proceedings to admit any late filed request once a late
filed document would have been admitted in the proceedings. In fact, for
each late filed submission, be it a document or a request, the Board
has to exercise its discretionary power based on applying criteria
independently in order to ensure objective decisions. There is indeed no
absolute right of admissibility of requests (R 1/13, not published in
OJ EPO).

In fact, for the reasons already given under point 2
above, the late filed translations of D14 and D13(O), a fortiori the
documents D14 and D13(O) themselves, could not be regarded as being new
facts and/or evidence coming as a surprise to the respondent at the oral
proceedings before the Board which would justify to admit late filed
auxiliary request(s).

As already put forward under point 3.3 above
and again argued by the appellant during the proceedings, there is no
absolute right for a party to have an issue decided by two instances.
In
the present case, in relation to the requirement of procedural economy,
the Board examined, as indicated to the parties during the oral
proceedings, whether the new late filed request would be prima facie
allowable in that it overcomes objection(s) regarded as validly raised
against the main request and does not raise any new issues.

Consequently,
during the oral proceedings, the discussion on admissibility of the
late filed auxiliary request(s) focused on whether the objection of lack
of inventive step starting from D13(O) raised against claim 1 of the
main request appeared prima facie overcome or not.

5.4 Prima facie overcoming inventive step objection(s)

5.4.1 The respondent argued that the following feature of claim 1:

"the
tape (5) enters the cutting system (2) moving in a direction
perpendicular to the cutting blade (2a); the blade (2a) cuts the tape
maintaining a preferably constant inclination; the contact point between
the blade (2a) and counterblade (2b) during the cut moves transversally
in a continuous way through the tape section (5)"

would enable prima facie to overcome the objection of lack of inventive step.

It
considered that none of the documents D13(O) and D7A discloses a
constant inclination of the blade as claimed. The contested patent, as
shown in figure 2, more particularly the top view, clearly shows that
the cutting blade (2a) is inclined with respect to the moving direction
of the tape or to the counterblade (2b), the latter being in a plane
perpendicular to the moving direction of the tape. This inclination of
the cutting blade (2a) with respect to the moving direction of the tape
has the technical effect to obtain a tape cut perpendicularly, while
moving. It has the advantage of obtaining a perpendicular cut, i.e. a
rectangular label, without having to stop the machine or to implement an
additional cutting station.

5.4.2 The Board could not share the
respondent's view for the following reasons put forward by the appellant
during the oral proceedings.

The respondent's interpretation that
the feature of claim 1 "preferably constant inclination" has the
meaning that the blade is necessarily inclined but "preferably" at a
constant angle over all its length cannot be followed. Indeed, due to
the word "preferably" used, this feature can also be seen as optional,
i.e. claim 1 also encompassing blades with no inclination. Such a
feature, which can be considered as optional, cannot support inventive
step.

Furthermore, the inclination shown in figure 2 of the
contested patent, i.e. perpendicularly to the moving direction of the
tape, is not included in claim 1. It is in fact not specified in claim 1
how or about what the blade is to be inclined. D7A, figure 1, also
discloses an inclined mobile blade (2a) about an axis perpendicular to
the plane of the sheet so that this feature is also known from D7A. When
implementing the solution of the cutting mechanism of D7A into the
machine of D13(O), the skilled person will certainly envisage to incline
the cutting blade accordingly, arriving at the claimed subject-matter
in an obvious manner.

Finally, contrary to the respondent's view,
although explicit from claim 1 that the tape is moving when entering the
cutting mechanism, the claim is silent on whether the tape actually
moves or not during the actual cutting process. Therefore, the alleged
technical effects and/or advantages put forward by the respondent of
obtaining a rectangular label without having to stop the machine or to
implement an additional cutting station are not to be considered since
not based on features defined in claim 1.

Consequently, as
indicated during the oral proceedings, claim 1 of the first auxiliary
request does not appear prima facie to overcome the objection of lack of
inventive step raised against claim 1 of the main request. The Board
thus decided to not admit the first auxiliary request in the proceedings
(Article 13(1) RPBA).

As a result, the respondent's request to
remit the case to the department of the first instance on the basis of
this request cannot be granted either.

6. Objection under Rule 106 EPC

6.1
At the oral proceedings, after the Board informed the parties about the
conclusion of its deliberation to not admit the first auxiliary request
in the proceedings, the respondent raised an objection under Rule 106
EPC on the grounds that the proceedings was not fair since, on one hand
D13(O) and D14 were admitted in the proceedings, with their late filed
certified translations, two days before the oral proceedings for D13(0),
while on the other hand the first auxiliary request restricted to the
process claims of the patent as granted, i.e. claims already in the
proceedings from the very beginning, was not admitted in the
proceedings. Furthermore, its right to be heard was violated since it
had not enough time for contacting and discussing the late filed
certified translation of D13(O) with its client as two working days were
certainly not sufficient.

6.2 However, the respondent did not add
any further arguments with respect to those already discussed, on one
hand, for the admission of the late filed documents D13(O), D14 and
their translations D13(O)', D13(O)", D14' and D14" and, on the other
hand, the admissibility of the first auxiliary request.

The
respondent's unsubstantiated objection did not point to any procedural
deficiency to be remedied. In view of this objection, the Board did not
see a reason to change its findings on the substantive issues which had
already been discussed.

As put forward above, the Board applied
the appropriate criteria independently for exercising its discretionary
power in deciding on the admission of, on one hand, the late filed
documents and, on the other hand, of the first auxiliary request. A fair
treatment does not require that a party losing on one issue should win
on the next one in order to obtain a balanced situation. In order to
safeguard fairness, each issue subject to the Board's discretionary
power has to be and has presently been decided by applying the
appropriate criteria for each issue independently. This is exactly how
the Board proceeded. Consequently, it could not find any lack of
fairness to be remedied.

Concerning the alleged violation of the
right to be heard, as already referred to above, the late filed
certified translation of D13(0) (=D13(O)") did not add any technical
information that the respondent could not have found and understood in
the machine translation D13(O)' for it to revert and discuss with its
client within one month before the oral proceedings. In the annex to the
summons for oral proceedings, the Board explicitly mentioned D13(O) as
potentially relevant for inventive step with even an invitation for
filing a translation, so that the respondent could not simply ignore
D13(O)' in its preparation for the oral proceedings. For the Board, the
objection based on only two days having been available for the
preparation for the oral proceedings could therefore not hold.

The
respondent was made aware of the grounds which were intended to
substantiate both issues - admission of late filed documents and their
translations; inadmissibility of the first auxiliary request - and had
obviously opportunities, at least during the oral proceedings, to take
position on both issues. Its comments made in using these opportunities
were carefully considered by the Board.

Consequently, the respondent's
right to be heard according to Article 113(1) EPC was safeguarded (see
Case Law of the Boards of Appeal, 7th Edition 2013, III.B.1.1, 1.2,
2.1.1 b)).

As a result, the Board dismissed the objection.

7. Second auxiliary request - Admissibility in the proceedings

7.1
Like the first auxiliary request, the respondent filed the second
auxiliary request at the very beginning of the oral proceedings.

As
a result of the late filing, the admission of the second auxiliary
request in the proceedings is subject to the discretionary power of the
Board as set out in Article 13(1) RPBA.

7.2 Amendments (Articles 123(2) and (3) EPC)
Claim
1 of the second auxiliary request corresponds to the combination of
independent process claim 16 and dependent claim 22 of the patent as
granted; dependent claims 2-8 of the second auxiliary request are based
on dependent claims 17-21, 23-24 of the patent as granted.
The
replacement in claim 1 of "container" by "package" is disclosed for
instance in the description of the application as originally filed,
column 1, lines 3-7, or in original claim 22.
The requirements of Articles 123(2) and (3) EPC are therefore fulfilled. This was not contested by the appellant.

7.3 Prima facie allowability

7.3.1
For the same reasons as for the first auxiliary request, as a matter of
procedural economy concern, the Board examined whether the new late
filed request would enable prima facie to overcome the objection
regarded as validly raised against the main request.

7.3.2 The respondent argued that the following feature of claim 1:
"the
sizes and the label text of the packaging line packages can be varied
from one package to another even more times or in a continuous way,
without interrupting the production cycle."
would enable prima facie to overcome the objection of lack of inventive step.
It
argued that none of the documents D13(O) and D7A discloses this
feature. In particular, the machine of D13(O) explicitly continuously
produces the same label, which is contrary to claim 1 (D13(O)', page 1,
lines 4-6 or D13(O)", page 1, lines 24-25).

7.3.3 This was not
contested by the appellant which put forward that the respondent had
more than one month after having received the machine translation
D13(O)' to react and file its auxiliary request. Consequently, such a
late filed request should not be admitted in the proceedings.

7.3.4
The Board, however, shares the respondent's view that the appellant
could not be surprised by a combination of features from claims of the
patent as granted, especially when the features taken from the dependent
claim (claim 22 in present case) relate to the core of the discussion
in opposition and appeal proceedings (see impugned decision, points 22
and 23.3; statement of grounds of appeal, point 5.2 iii)). Since, on one
hand, the combination of D13(O) and D7A does not appear prima facie to
lead the skilled person in an obvious manner to the subject-matter of
claim 1 of the second auxiliary request and, on the other hand, the new
set of claims does not appear to introduce new issue(s) which would have
not been discussed so far in the proceedings, the Board does not see
any reason to not admit the second auxiliary request in the proceedings.

7.3.5
The decision under appeal dealt exclusively with the machine claims of
the patent as granted, which are no longer comprised in the second
auxiliary request of the respondent. Therefore, taking into account that
the set of process claims according to the second auxiliary request
appears prima facie to overcome the lack of inventive step objections
raised in the course of the appeal proceedings, the Board considers it
appropriate to exercise its discretion under Article 111(1) EPC to remit
the case to the Opposition Division for further prosecution on its
basis.

Since "prima facie" merely sets a first hurdle by
definition, the Opposition Division will have to consider in the course
of the further prosecution, inter alia, whether the claims of the second
auxiliary request actually comply with the requirements of Article 56
EPC.

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2.
The case is remitted to the first instance for further prosecution on
the basis of the second auxiliary request (claims 1 to 8) filed during
the oral proceedings on 21 May 2014.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T218210.20140521. The whole decision can be found here. The file wrapper can be found here. Photo by Kanko obtained via Flickr.